Important changes in.UK dispute resolution policy
Nominet's DRS is a popular tool for brand owners as it is a relatively quick and inexpensive form of dispute resolution for .uk domain name disputes. To succeed in a dispute, the complainant must show that it has rights in a name and the registration of the disputed domain name is an “abusive registration”.
Whilst Nominet's DRS has been largely successful (since 2001, over 5,300 complaints have been filed), it has faced some criticism both from brand owners who claim that the procedure is expensive (£750 for an expert to determine the dispute) and domain name sellers who claim that the DRS is pro-brand owner (81 per cent of complaints have been upheld in the past 12 months).
Pro brand owner changes
Some of the changes to the DRS will benefit brand owners. These are highlighted below, namely:
Under the previous system all decisions under the DRS were provided with detailed written reasoned judgement. This meant that complainant had to pay £750 in order to cover the fees of the expert appointed by Nominet.
Birgit Schluckebier, solicitor at international law firm Eversheds, comments: “Since 29 July 2008, complainants can now opt for a summary decision. This means that rather than provide a decision with detailed reasoning, the expert will consider the complaint and, if it considers that the complaint should be upheld, the expert will merely sign a form to certify that the complainant has proven, on the balance of probabilities, that it has rights in the disputed domain name and that it is an abusive registration. No detailed reasons for the decision will be provided.”
“The fee payable to Nominet for summary determination will be £200, as opposed to £750 for a full decision. This represents a significant cost saving for complainants and is likely to encourage them to pursue complaints, particularly given the high number of uncontested disputes.”
Many disputes involve the issue of whether a complainant can acquire rights in a descriptive name. The new policy expressly provides that rights may be acquired in a descriptive term, provided the name has acquired a secondary meaning.
This change in policy will limit the extent to which respondents are able to dispute a complainant's rights in a descriptive term. However, to show that the name has acquired a secondary meaning, complainants will still need to submit detailed evidence of their use of the name.
Likelihood of confusion and threats to use a domain name
The new policy also provides that if the respondent is using (or threatening to use) a name in a way which has confused (or is likely to confuse) people into believing that the domain name is registered or operated by the complainant, this will amount to an abusive registration.
This brings the policy into line with UK trade mark law and reflects the experts' interpretation of the existing policy.
Some amendments to the policy have clearly been introduced as a result of Nominet's consultation with domain name sellers or other internet stakeholders. This are outlined below.
Reselling of domain names
Complainants often seek to assert that if the respondent engages in a business of reselling domain names, this is evidence of an abusive registration. However, under the new policy, Nominet has clarified that it is lawful to trade in domain names for profit and to hold a large portfolio of domain names.
In such circumstances, whether or not a particular domain name is an abusive registration will depend on the facts of the case.
The new policy also states that the sale of traffic (ie connecting domain names to parking pages and earning click-per-view revenue) is not in itself objectionable. Again, this was frequently used by complainants as evidence of an abusive registration.
From 29 July 2008, to determine whether a particular registration is abusive, the expert will now need to take into account the nature of the domain name and the advertising links on any parking page and consider whether the use of the domain name is ultimately the respondent's responsibility.
Birgit continues: "Following these amendments complainants will now need to ensure that they submit evidence to show that on the particular facts, the respondent's activities are abusive. For example, if the respondent engages in a pattern of selling domain names which contain well known names or if the site to which the name resolves contains links to competing sites or sites that may otherwise damage the complainant's brand name.
“Due to the fast-moving pace of the internet, the action a brand owner can take to protect its brand online is continually changing.”
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